DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s amendments and response to Election/Restriction has been received on 1/8/26 and 4/1/26, respectively. Claims 1, 3, 7, 8, 15 have been amended. Claims 18-20 are new.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office Action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/24/25, 4/2/26 are considered by the examiner.
Election/Restrictions
The Applicants elects:
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for examination.
Claim Rejections - 35 USC § 112
The rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, on claim 15 has been withdrawn because the Applicant amended the claims.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for formula A, does not reasonably provide enablement for “*” represents a site where the group represented by formula A is connected to another structure in the silicon compound. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. Specifically, the limitation ““*” represents a site where the group represented by formula A is connected to another structure in the silicon compound, “ which can encompass groups or another structure that are not discloses in Applicants specification. Appropriate corrections or further clarification is required.
Claim 7 and 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for formula A and further comprising D structure of phosphinate, does not reasonably provide enablement for how the structure of formula A with D structure of phosphinate can also comprise tris(trimethylsilyl) phosphite structure since the tris(trimethylsilyl) phosphite is closed by CH3 groups. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The claimed phosphinate cannot be the tris(trimethylsilyl) phosphite, since by definition the phosphonate group must comprise one C-P and P-H bond and the tris(trimethylsilyl) phosphite has three P-O bond. In addition, the silicon compound structure cannot further contain tris(trimethylsilyl) phosphite since it is closed off by CH3 bonds, which does not have a connection to another phosphinate group. Appropriate corrections or further clarification is/are required.
Claim 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for formula A and further comprising a structure for example, tris(trimethylsilyl) phosphite structure since the tris(trimethylsilyl) phosphite is closed by CH3 groups., the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The claimed tris(trimethylsilyl) phosphite closed off by CH3 bonds, which does not show how the tris(trimethylsilyl) phosphite is connected to structure A. Appropriate corrections or further clarification is/are required.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, “another structure” in the limitation ““*” represents a site where the group represented by formula A is connected to another structure in the silicon compound” is broad that may represent unlimited amounts of structure that isn’t represented in scope of the Applicant’s disclosure. The subject matter of a claim must still have definite boundaries, no matter how broad or narrow. The problem arising from the lack of limits would not be undue breadth, but that the actual extent of this breadth cannot be determined. While a skilled artisan may be able to select some components, the artisan would not know what the limits or boundaries of the possible components are. Appropriate corrections are required.
Dependent claims are rejected for the same reasons.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, it is unclear if formulas 1-5 represents D groups of claim 1 or another structure of formula A. Appropriate corrections and/or further clarifications are required.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, it is unclear of Formula 1-5 discloses the D groups of phosphinate and if it does, than conditions of (1) at least two L1 groups are selected from -OT1 cannot be a phosphinate group. A phosphinate group must have 1 C-P bond and 1 C-H bond or 2x C-P bond and it won’t have at least two L1 groups selected from OT1. Appropriate corrections or further clarifcaitions is/are required.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, it is unclear if “optionally” is intended to be claimed. Appropriate corrections or further clarification is/are required.
Claims 7 and 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, if claim 1 comprises structure A and D comprises phosphinate, there is no possible alternative to also comprise a tris(methlsilyl) phosphite. By definition the phosphinate must comprise one C-P bond and another of P-H bond. In tris(methylsilyl) phosphite, the P is to three P-O bond. Appropriate corrections or further clarification is/are required.
As best understood, please see the rejections below.
Claim Rejections - 35 USC § 102
The rejection under 35 U.S.C. 102(a) as being anticipated by Min et al., on claims1-6, 9-11, 13-17 are withdrawn because the Applicant has amended the claims.
The rejction under under 35 U.S.C. 102(a) as being anticipated by Yu et a. (EP2908375), on claims 1-3, 7, 8, 10, 11, 13-15 are withdrawn because the Applicant has amended the claims.
Claim Rejections - 35 USC § 103
The rejection under 35 U.S.C. 103 as being unpatentable over Min et al. in view of Goodenough et al. on claim 12 has been withdrawn because the Applicant has amended the claims.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-6, 9-11, 13-17, 19, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoecker et al. (US 11404723) in view of Yu et al. (US Patent 10115968).
Regarding claims 1- 4, 6, 19-20, the Hoecker et al. reference discloses an electrode plate comprising a current collector and an electrode film on a current collector. The Hoecker et al. reference disclose an electrode additive (8:1-5) to comprise a phosphorous compound, specifically silyl ester phosphinates of formula A
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Wherein G is at least phosphorus and at least one group of L1 is OT1 and T1 is formula A and wherein R1 is alkyl group.
The Hoeker et al. reference is silent in specifying the phosphorus compound to be a composition of the electrode film layer on the current collector, however, the Yu et al. reference discloses phosphorus additive to be a composition of an electrolyte or an electrode film layer on the current collector. A patent claim can be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. KSR v. Teleflex
Regarding claim 5, the Hoecker et al. reference discloses the conditional (1) in which at least two L1 groups are selected from -OT1 in which one T1 is voided (since T1 is optional or double bonded O) and the other T1 is structure A.
Regarding claim 9, the Hoecker et al. in view of Yu et al. reference (herein referred to as modified Hoecker et al.) discloses the phosphorus additive can be in a composition of 0.1-3 wt % (7:45-50; which encompasses 0.1-1.2 wt %).
Regarding claims 10 and 11, the modified Hoecker et al. reference disclsoes the electrode film to comprise a positive electrode active material for lithium-ion batteries (Yu et al. 9:15-20).
In addition, please note that for lithium-ion batteries or for sodium ion batteries comprises “intended use” language and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claim 13, the modified Hoecker reference discloses the composition of the electrode film layer further comprises a conductive agent and a binder (Yu et al. Example 5).
Regarding claim 14, the modified Hoeker reference disclose using organic solvents and thus, there is no water content in the electrode film (Yu et al. Example 5).
Regarding claim 15, the modified Hoecker et al. reference disclose a preparation method of the electrode plate according to claim 1 comprising applying a film layer slurry onto a surface of a current collector to form an electrode film for preparing an electrode plate, wherein the composition of the film layer slurry comprises silicon compound (Yu et al. Example 5).
Regarding claim 16, the modified Hoecker et al. reference discloses a battery comprising the electrode plate of claim 1 (Yu et al. Example 5)
Regarding claim 17, the Hoecker et al. reference discloses the battery according to claim 16 is for a vehicle (21:40-50).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 12 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoecker et al. (US 11404723) in view of Yu et al. (US Patent 10115968) in view of Goodenough et al. (US Publication 2017/0005327).
Regarding claims 12 and 18, the modified Hoecker et al. reference disclose the claimed invention above and further incorporated herein. The modified Hoecker et al. reference discloses a lithium ion battery and components for a lithium ion battery and is silent in disclosing positive active material comprising sodium. However, the Goodenough et al. reference discloses components used in lithium ion batteries have been known to be used in sodium ion batteries so to provide experimental effects for sodium ion batteries. Therefore, it would have been obvious before the effective filing date of the invention to provide different components of lithium ion batteries for sodium batteries in order to provide experimental data and knowledge to one of ordinary skill in the art. A patent claim can be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. KSR v. Teleflex
The Goodenough et al. reference discloses using NaFePO4 as a cathode active material for sodium ion batteries.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HELEN OI CONLEY whose telephone number is (571)272-5162. The examiner can normally be reached 8:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Smith can be reached at 5712728760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Helen Oi K CONLEY/ Primary Examiner, Art Unit 1752
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